Trademark Research Articles

Trademarks in the Digital Age: The Current Challenges and Legal Protections

Abstract: In today's highly dynamic and rapidly evolving digital society, trade marks are experiencing profound transformations, presenting unique opportunities for trade mark owners to reach a broader and more diverse audience, thereby significantly enhancing brand visibility and recognition. However, these advancements also bring forth potential challenges, particularly directly related to trade mark rights infringement. Consequently, this dissertation delves deeply into the typical and recurrent conflicts that inevitably arise in relation to trade marks within the digital sphere by assessing the dilemma of existing representative cases, concluding that the central disputes existed. Additionally, it undertakes an in-depth exploration of the existing legal frameworks that govern this domain. Finally, this emphasizes the need for stronger international regulation of trademark rights across digital platforms. It is important to have the support of all parties involved in commercial actions to maintain a harmonious trading environment in the digital world while respecting the rights of trademark owners and maximizing profits from this flexible context.

Consumer Confusion: The Sole Focus of Trademark Law

Abstract: In recent years, the expansion of the global marketplace, driven by the digital revolution, has led to a growing complexity in trademark disputes. The balance between protecting intellectual property and preventing consumer confusion has become increasingly delicate. Traditionally, trademark law was designed primarily to prevent consumer confusion and ensure fair competition. However, with the introduction of the dilution concept, this focus has shifted, resulting in expanded trademark rights that can inhibit innovation and free competition. This paper revisits the original intent of trademark law, advocating for a refocus on consumer confusion as the core principle. Through an examination of legislative intent, theoretical underpinnings, and case law, this paper demonstrates the need to reorient trademark protections to ensure they serve the broader goal of market fairness and economic development. This research highlights that excessive protection of trademark rights can lead to monopolistic practices, which ultimately harm both consumers and market competition. It contributes to the ongoing discussion about how to balance trademark rights with consumer protection, aiming to guide future legal reforms that foster both innovation and competition.

O REGISTRO DE MARCA COMO VANTAGEM COMPETITIVA: UM PANORAMA DO SERTÃO SERGIPANO NO ANO DE 2021

The study explores the importance of registering trademarks as a tool for protection and competitive advantage for companies in the Sergipano Hinterland. It highlights how registered trademarks differentiate themselves in the market, creating identity and avoiding legal conflicts. The research identifies the risks that small and medium-sized companies face when operating without registration, such as losing their name and rebranding costs. Despite the increase in trademark registration in Brazil, many businesses in the region have yet to register their trademarks, which makes them vulnerable. The objectives include identifying the benefits of registration, assessing the risks of not registering and understanding the reasons for the low number of registrations. The methodology involves a bibliographic and documentary survey. The results show that the lack of registration compromises competitiveness and the need to raise awareness of its importance.

‘Foreign’ Trademarks in Jordan and the Influence of Imperial Powers

Abstract The Jordanian Trademarks Law, as it stands today, suffered from the influence of imperial powers. Namely, the influence of the USA and UK has resulted in the introduction of a classification of trademarks, which is: “Foreign Trademarks”. This paper proves the said influence through the standard of well-known trademarks under the Jordanian Trademarks Law, in addition to the preferential treatment of the foreign trademarks in terms of invalidity and annulment. It is argued that the privileges given to foreign trademarks were to the detriment of national trademarks. This paper is a call for Jordan to put national interests first in this area of law, and advances an argument for a legislative reform, De lege ferenda, and the way Jordanian courts and the trademarks’ registrar should deal with the law as it stands today, De lege lata, in order to mitigate the loss that ‘national’ marks currently suffer from.

Enforceability of trade mark rights in Metaverse: where virtual worlds meet legal realities

Abstract While Metaverse is a virtual world, trade mark law is a reality. Consequently, Metaverse cannot undermine trade mark law, which is being given the opportunity to demonstrate its plasticity once again. There is therefore no need to create any false suspense: trade mark law is enforceable in the virtual world. However, the modalities of this enforceability are uncertain and thus merit in-depth study. The central question, currently the focus of much heated debate, is whether right owners need to register a new Metaverse-specific trade mark. In our view, such a registration is not only unnecessary but also dangerous. It is pointless because the courts have already confirmed that protection for real products and services extends to equivalent virtual products and services. Consequently, the infringement action loses none of its effectiveness in Metaverse. Malicious users believing they are living a dream in Metaverse could be in for a rude awakening. Finally, if re-registering a specific trade mark in Metaverse is not only useless but also dangerous, this is because one can easily lose one’s right to prohibit in the virtual world. Ultimately, re-registering a new trade mark specific to a virtual world entails a major risk: one that will prove to be very real.

Legal Protection for Well-Known Trademark Rights Holders Against Trade of Counterfeit Goods Under the Osakafom Brand (Study of Supreme Court Decision Number: 1390 K/Pdt.Sus-Hki/2023)

This study examines the legal protection of well-known trademarks in Indonesia, focusing on the Osakafom trademark dispute. Using a normative legal research methodology, this research analyzes relevant legal norms, judicial decisions, and the enforcement of Law No. 20 of 2016 concerning Trademarks and Geographical Indications. Despite the existence of this legal framework, enforcement remains weak, allowing counterfeit goods to flood the market. Through an analysis of the Supreme Court Decision No. 1390 K/Pdt.Sus-Hki/2023, this study highlights the shortcomings in enforcement and the slow judicial process. The results indicate that while the law provides a basis for trademark protection, the delays in legal proceedings and the burden placed on trademark holders to monitor infringements reduce the law's effectiveness. The findings emphasize the need for stronger enforcement mechanisms, quicker judicial proceedings, and increased government involvement in monitoring counterfeit goods. This paper also suggests that international cooperation is crucial in addressing the cross-border nature of counterfeit operations and protecting the integrity of well-known trademarks in the global market.

Development of human capital in Kazakhstan’s higher education institutions: financial investments, faculty qualifications, and research output (2018–2022)

This study examines the development of human capital in higher education institutions (HEIs) in Kazakhstan from 2018 to 2022, focusing on financial investments, infrastructure support, faculty qualifications, research output, and student outcomes. Utilizing comprehensive data from official sources, the analysis reveals significant growth in financial commitment to higher education, with substantial increases in expenditures, revenues, and investments in educational infrastructure. The data indicate a diverse and increasingly qualified faculty, though gender imbalances persist at senior academic levels. Research output, as measured by publications indexed in Scopus, has shown consistent growth, reflecting enhanced research productivity. Student performance metrics, including graduation rates and employment outcomes, highlight the effective preparation of graduates for the job market, with rising average salaries and employment rates. Innovation activities within HEIs, such as patent applications and trademark registrations, demonstrate a dynamic but variable landscape. The study identifies key areas for improvement, including the need for sustained investment, policies promoting gender equality in academia, and support for innovation activities. The findings underscore the importance of aligning educational programs with market needs to further improve graduate employability. This study provides valuable insights for policymakers and educational leaders to enhance the quality and competitiveness of higher education in Kazakhstan, contributing to the country’s socio-economic development.

The Unproductive “Overconstitutionalization” of EU Copyright and Trademark Law – Fundamental Rights Rhetoric and Reality in CJEU Jurisprudence

In EU copyright and trademark law, the protection of the right to intellectual property is the rule, and breathing space for competing fundamental rights, such as freedom of expression and the right to a healthy environment, is the exception. While formally recognizing the need to balance protection interests against other fundamental rights and values, the Court of Justice of the European Union (CJEU) fails to use competing fundamental rights productively. Instead, the Court has developed a meaningless fundamental rights rhetoric that produces the false impression that there is sufficient room for all competing rights and interests within the existing copyright and trademark systems. However, the current configuration of EU copyright and trademark law fails to offer users the chance of meeting right holders as equals, even if their fundamental rights are of equal ranking in the Charter. By adding fundamental rights cosmetics to imbalanced protection systems, the CJEU only cements and further stabilizes the existing rule/exception edifice that is strongly in favour of right holders. Introducing the mantra of internal balancing – requiring the reconciliation of competing rights and interests within the confines of secondary copyright and trademark legislation – the Court has even created a considerable risk of sacrificing competing fundamental rights on the altar of the EU harmonization agenda. By letting the harmonization objective reign supreme, the CJEU has also given the three-step test in copyright law and the honest practices proviso in trademark law a quasi-constitutional status. As a result, these open-ended provisions undermine limitations of exclusive rights that could support competing fundamental rights. To remove the imbalances in current EU copyright and trademark law, it would be necessary to introduce upfront gatekeeper requirements that prevent illegitimate infringement claims from the outset when competing fundamental rights are at stake.

A SEMIOTIC STUDY OF CARICATURE: THE STRUGGLE BETWEEN AMERICA AND CHINA

Visual communication is a compound process, which requires broad knowledge of semiotics. Semiotics is the education of signs and symbols. In what way these signs and symbols are interpreted is studied under semiotics. It has many concealed signs and connotations, for example: brand name, logo, package design, color, punch line and trade mark, etc. The present study presents one of the most significant philosophies and replicas of visual social semiotics, namely, Kress and van Leeuwen’s "Grammar of Visual Design". It involves the description of semiotic resources, what can be said and done with images (and other visual means of communication) and how things people say and do with images can be interpreted. Thus, the communicative values of signs in a caricature are a portrait with the volume turned up. A caricature is a painting, or more commonly a picture, of an object or item in which the characteristics and structure have been blurred and exaggerated to ridicule or satirize the topic. Thus the current study aims at studying some caricatures nonverbally through analyzing the image and colours of it. The study tackles semiotics; specifically social semiotics, caricature, the elements of analyzing caricature, which are: image, word, and colour. The first part carries on the introduction of the current study as well as tackling the problem of the study, the literature review of semiotics in general and social semiotics in particular. The second part carries on the data and its analysis through the model, as well as the visual results, finally, giving the conclusion.

The concept of ‘due cause’ and its role in safeguarding fundamental rights under EU trade mark law: how should the CJEU rule in IKEA, C-298/23?

Abstract While trade mark rights themselves constitute fundamental rights within the right to property, they may also collide with the fundamental rights of third parties. The latter is particularly evident where third parties try to justify their unauthorized use of a trade mark on the basis of their own fundamental rights. The collision between the fundamental rights–protected interests of the trade mark proprietor and the third parties become all the more apparent when it comes to the protection of trade marks with a reputation. Trade marks with a reputation are particularly exposed to use by third parties due to their high level of appreciation and recognition among the public and therefore deserve a special protection. However, this special protection must not get out of hand and must be restricted wherever the fundamental rights interests of third parties outweigh those of the trade mark proprietor. As a result, a balance must be struck between the colliding fundamental rights interests. All this raises the question where such a balancing of interests could take place in the context of the European Union (EU) Trade Mark Regulation 2017/1001 (EUTMR) and Directive on the European Union Trade Mark (EUTMD). And once the ‘where’ has been resolved, a question still remains as to how an appropriate balance can be achieved or rather what criteria need to be taken into account when balancing these interests. To answer these questions, existing case law of the Court of Justice of the European Union (CJEU) provides only limited to no substantive guidance. It is therefore not surprising that a Belgian national court requested the CJEU to clarify precisely these questions at EU level in 2023 (IKEA, C-298/23). In this case, the main role is played by the negative condition ‘without due cause’, which arises from the EUTMR and EUTMD provisions protecting trade marks with a reputation and which stipulates that the trade mark proprietor can only enforce the special protection if the third party is unable to establish that the use of the trade mark takes place with ‘due cause’. It is therefore the task of the CJEU to clarify whether the required balance of fundamental rights interests can be achieved within the framework of the undefined legal concept of ‘due cause’ and, if so, to specify the criteria by which such a balance can be achieved. This article sets out and discusses how the CJEU should solve this task and concludes that the concept of ‘due cause’ must be interpreted broadly in order to provide a flexible counterweight to the far-reaching protection of trade marks with a reputation. Hence, the concept of ‘due cause’ can be understood as a safeguarding mechanism for the fundamental rights of third parties, whereby various criteria must be taken into account in order to achieve a fair balance with the fundamental rights–protected interests of the trade mark proprietor.

Understanding the MetaBirkin: Trademark Law and an Appropriate Legal Standard for NFTs

This note argues that the recently decided trademark case, Hermès v. Rothschild, highlighted the flaws of the Polaroid factors and their singular focus on determining consumer confusion, and makes a case for an expanded understanding of a copyright fair use defense in trademark law. Two forms of fair use are already acknowledged in the trademark context, but neither are comparable to the much stronger fair use exception in copyright law. The factors in the copyright fair use defense seem to strike directly at the heart of the most salient concerns in Hermes v. Rothschild, while the Polaroid factors seem to allow only tangential considerations of certain key factors.

Vidal v Elster: US Supreme Court confirms constitutionality of Lanham Act prohibition on registration of trade marks comprising names of living people without their consent

Abstract In Vidal v Elster, the US Supreme Court upheld the constitutionality of a Lanham Act prohibition against the registration of trade marks comprising the name of living people withut their consent. Although all Justices agreed on the result, their reasoning differed, with the majority opinion highlighting the increasing importance of historical analysis in trademark cases.

Use of state symbols in trademarks: problem issues

The article examines the international and national legal framework for the protectionof state symbols, in particular as part of a trademark. The facts of illegal use of state symbolsin everyday life and for commercial purposes have become more frequent. However, inUkraine, the issue of approval of state symbols by one legislative act or separate laws ofUkraine has not been resolved. International law established protective norms that providefor the procedure for the use and responsibility for the improper use of state symbols.Article 6ter of the Paris Convention is the most important norm that supports the dignityand integrity of coats of arms, flags and national emblems. This prevents their unauthorizedcommercial use and exploitation, while promoting international cooperation and respectbetween countries and international organizations. It applies to all states that areparties to the Paris Convention, as well as to WTO members, regardless of whether theyare parties to the Paris Convention or not, in accordance with Article 2.1 of the TRIPSAgreement. Therefore, the approach of the Intellectual Property Office regarding the inclusionin the trademark of an image imitating the small State Coat of Arms of Ukrainecontradicts Art. 6ter and also Art. 65 of the Constitution, which establishes that honouringstate symbols is the duty of a citizen of Ukraine. This prevents their unauthorizedcommercial use and exploitation, while promoting international cooperation and respectbetween countries and international organizations. The foreign practice of legislative regulationof stopping the unauthorized use or abuse of state emblems deserves attention.Thus, Sec. 97 of Ireland's Trade Marks Act empowers the Minister to take action in theevent of unauthorized use by any person in the course of a commercial activity of the StateCoat of Arms or similar images. A fine is imposed on the violator. Sec. 98 gives the Ministerextraterritorial powers to take relevant actions outside the state. This provision is intendedto prevent, limit, or provide penalties for the registration, use, or application togoods not manufactured in the State of any trademark or other mark or description, orfalsely indicating the same. It is concluded that such norms should be provided for in thenational legislation.

Using artificial intelligence in trademark registration in light of the UAE trademark Law

When a commercial project is established to produce certain goods or services of high quality to compete and attract consumers, the project owner must adopt a trademark for the good, service or product in order to distinguish what he does from other competing services, goods and production. This requires registering the trademark with the relevant institutions in the country of registration, which requires procedures, requirements and attachments to be submitted. Then comes the role of those institutions in examining the submitted application in accordance with the law in force in the country of registration. Hence, we are discussing the special procedures for registration in the United Arab Emirates, which is one of the most advanced countries in government procedures. We are proposing the idea of introducing artificial intelligence software into the examination and judgment process to speed up the registration process for fear of it being registered by another person in another country that has an agreement with the UAE. Therefore, ownership of the trademark will be for the first to register.

The Interplay of Trade Mark and Copyright Protection for Three-Dimensional Shapes

The Interplay of Trade Mark and Copyright Protection for Three-Dimensional Shapes

The Sustainability of EU Trade mark law

The Sustainability of EU Trade mark law

Bad Faith in the Cancellation of the Trademark Decision No. 2/Pdt.Sus-HKI/2021/PN. Niaga Sby

In granting a decision to cancel the trademark, the judges interpreted the existence of bad faith with different reasons in their considerations. One of the cases of trademark cancellation due to bad intentions is Case Number 2/Pdt.Sus-HKI/2021/PN. The purpose of this study is to find out the relationship between the cancellation of registered trademarks at the Directorate General of Intellectual Property of the Republic of Indonesia related to bad faith and to find out how to analyze the reasons for the judge’s consideration in decision Number 2/Pdt.Sus-HKI/2021/PN. Sby’s business is related to bad faith. This research is a normative legal research, with a legal approach and a case approach. From this study, it was obtained that the relationship between the cancellation of a registered trademark and bad faith was seen from the beginning of the registration application process, so that the Panel of Judges in deciding on a trademark cancellation decision, first looked at whether the element of bad faith had indeed existed from the beginning of the registration application, and regarding the juridical analysis of the decision of case 2/Pdt.Sus-HKI/2021/PN. Niaga Sby, Coffe Beer and Sari Temulawak Ngoro brandsThe Defendant was registered in bad faith from the beginning of the trademark registration without involving all heirs so that the Defendant hereby had bad intentions or bad faith because from the beginning of the registration, it was proven that there was bad faith by the Defendant. So juridically it has violated article 21 paragraph (3).

Comparative Review on the “Related Goods” under CPTPP and the “Similar Goods” under Trademark Law

Comparative Review on the “Related Goods” under CPTPP and the “Similar Goods” under Trademark Law

The Audi Spare‐Parts Case (CJEU): A closer look at critical opinions

AbstractThe present article is confined to the legal examination of the ‘critical opinions’ and the ‘misconceptions’ rendered or drawn with regard to a recent judgement of ‘Court of Justice of the European Union (CJEU)’ in a case, commonly known as ‘Audi Spare Parts Case’ (C‐334/22), whereby the CJEU has disallowed the use of a registered mark/sign (or a shape which is identical or similar to a registered mark/sign) on the spare parts of the car (or any complex product or machine for that matter) which interferes with the ‘essential functions’ of a mark/sign. The article summarily notes the involved facts and the legal context of the aforesaid case and then proceeds to analyse the congruity and the legal validity of the noted ‘critical opinions’, with the support of established legal principles, precedents, and statutory frameworks. The article also addresses and clarifies some misconceptions drawn with regard to the relevant legal concepts (of the Trade Marks Law), and concludes, in the wake of the findings of the legal analysis, that the Hon'ble Court has rightly upheld the intent and purport of ‘The Trade Marks Regulation’. At the end, the implications of the aforesaid judgement are also mentioned within a broader perspective, explaining their significance beyond the immediate context.

Trademark Right Protection in Electronic Commerce: Challenges and Countermeasures

As a vital element of core intellectual property for businesses, trademarks play a crucial role in upholding brand image, safeguarding consumer rights, and fostering fair market competition. This paper aims to delve into the challenges encountered in trademark rights protection within e-commerce based on relevant content from trademark law. It further proposes corresponding legal strategies to address these challenges with the goal of promoting sustained and healthy growth within the e-commerce industry. This study uncovers complexities and covert nature associated with trademark infringement activities in e-commerce, as well as widespread cross-border trade infringements and high costs related to evidence collection and rights protection. Corresponding measures to address these issues are then proposed. The research findings underscore the significance of refining laws and regulations, bolstering international cooperation and judicial assistance efforts, intensifying enforcement measures and penalties, as well as establishing robust mechanisms for protecting rights. This paper holds substantial importance in advancing a healthy environment for e-commerce industry development, maintaining equitable competitive market conditions, safeguarding legitimate rights of trademark holders and consumers, and propelling forward intellectual property protection system construction within the realm of e-commerce.